Tagged: #Chile

As part of my ambitious plan to provide you with information on online copyright enforcement procedures through all of the countries in the world, I come to you with part III of my ongoing posting series on national notice and takedown provisions—South America. Although few South American countries have adopted full-fledged notice and takedown provisions as provided in the U.S., Australia, and others, many South American countries have or an in the process of adopting national notice and takedown provisions, either through legislative reforms or judicial action, or have adopted other measures owners or rights holders of copyright protected works (collectively, “Rights Holders”) can use to protect their works online.

However, as I have mentioned in previous posts on this topic, determining whether a Rights Holder can enforce rights in their work online and abroad depends on: (1) whether a work qualifies for foreign protection (aka national treatment) under the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) or the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS); (2) whether the Internet service provider (ISP) hosting the infringing use of the work is subject to jurisdiction in the country where online enforcement is sought; and (3) what online copyright enforcement procedures are available in the country of enforcement.

Each of these issues have been previously examined here and those with further questions should consult with a qualified attorney.

Below are the current online copyright enforcement procedures in each South American country. However, a couple of preliminary notes:

Classifications: A South American country that maintain legal protocols for a Rights Holder to directly petition an ISP to remove infringing content in order for the ISP to qualify for safe harbor protection from contributory liability for copyright infringement is identified below as a “Notice and Takedown System.” A country that does not provide legal provisions for a Rights Holder to directly enforce their copyright protections through an ISP notification system, and are instead forced to seek copyright enforcement through legal action are referred to as a “Judicial System.”

Notice Limitations: Unfortunately, even if a country maintains a Notice and Takedown System, an ISP may still refuse to disable access to a website or website content upon receipt of a Rights Holder’s infringement notice. In such instances, a Rights Holder may be forced to seek enforcement through that foreign country’s legal system in order to remove such online content.

Time Sensitivity: As several of the listed countries in this posting are evaluating or in the process of implementing copyright reforms, either through legislation or judicial action, there is the possibility that the following information may soon change.

Overview and Notes: Argentina does not currently provide statutory notice and takedown provisions. However, it was reported in June 2014 that the Argentine Supreme Court (Corte Suprema de Justicia de la Nación) heard oral arguments in Rodríguez v. Google Inc., where a lower appellate court had established a ISP safe harbor test where a Rights Holder could “notify [a] search engine, identifying the alleged infringing content” and the “search engine acts expeditiously to block the content via a quick and effective filtering method.” The Argentine Supreme Court has yet to publish a final opinion in Rodríguez, and Argentina’s civil law system makes it unclear whether any such judicial decision will require that all Argentine-based ISPs be subject to notice and takedown provisions upheld in such a decision.

Overview and Notes: Brazil has evaluated notice and takedown reforms, enacted ISP liability legislation, and has even ruled that ISPs are subject to a notice system. However, it is still unclear whether nationwide notice and takedown provisions have been fully established in Brazil. In 2012, the Brazilian government evaluated the Copyright Law Reform Bill (Bill nº 3133/2012), which commentators had reported was to include U.S.-style notice and takedown provisions. However, the Reform Bill has yet to be implemented. In August 2012, the Brazilian Superior Court of Justice held in a special judiciary opinion in Google Brazil (Special Appeal No. 1323754/RJ) that an ISP was required to temporarily remove infringing content 24 hours upon notice of infringement from a Rights Holder in order to retain immunity from from contributory liability for copyright infringement. However, commentators have questioned Google Brazil’s applicability to other Brazilian-based ISPs, requirements for Rights Holder infringement notices, and the duration of an ISP’s removal obligations, based on Brazil’s civil law system.

In May 2014, the Brazilian government enacted the Internet Bill of Rights (Law No. 12.965) that establishes liability for “Internet intermediaries” for failing to timely comply with a judicial takedown order. However, the Internet Bill of Rights provides no direct Rights Holder infringement notice provisions.

Overview and Notes: Chile does not currently possess notice and takedown provisions despite agreeing in the U.S.-Chile Free Trade Agreement (FTA) to provide “legal incentives for [ISPs] to cooperate with copyright owners in deterring the unauthorized storage and transmission of copyrighted materials.” Chile rejected adopting notice and takedown provisions in its ratification of the U.S.-Chile FTA, as well as in proposed copyright reform legislation in 2010. Instead, Chile implemented an expedited judicial enforcement process where a Rights Holder may submit a judicial petition against a Chilean-based ISP in a Chilean Civil Court to expeditiously evaluate the alleged infringement and obtain an injunctive takedown order.

-The allegedly infringed rights, with a specific indication of the rights and the infringement procedure;
-The infringing material; and
-The location of the infringing material in the ISP’s respective networks or systems.

Colombia

Enforcement System: Judicial System

Berne Convention Member: Yes

Notes and Overview: Despite multiple reform efforts, Colombia does not currently maintain any notice and takedown provisions. Colombia had agreed to adopt notice and takedown provisions in a side letter to the U.S.-Colombia FTA in 2006. However, Colombia has yet to implement such provisions. In 2011, Colombian legislators introduced copyright reforms in Bill No. 201 (aka Ley Lleras 1.0) that included notice and takedown provisions, but it was not enacted. The Colombian Congress subsequently passed similar reform legislation in 2012, Law No. 1520/2012 (aka Ley Lleras 2.0), but such legislation was largely invalidated by the Colombian Constitutional Court in January 2013 on the grounds that such legislation was not properly implemented. Additional proposed copyright reform legislation, Bill No. 306, was circulated for comments in March 2014, but does not include notice and takedown provisions and has yet to be implemented.

Overview and Notes: Ecuador does not currently maintain any notice and takedown provisions. Further, it was reported in December 2013 that the Ecuadorian National Assembly amended its Penal Code and the Intellectual Property Law to decriminalize all IP rights violations, thereby only allowing administrative actions and fines to enforce copyright in works in Ecuador, online or otherwise.

Enforcement System: Notice and Takedown System (*Restricted and Undetermined)

Berne Convention Member: Yes

Overview and Notes: French Guiana is an overseas department of France and is thereby governed by French copyright law. As a European Union (EU) member state, France was required to adopt notice and takedown provisions as provided under Article 14 of the EU Electronic Commerce Directive (Directive 2000/31/EC). However, the EU Directive provides only general recommendations, thereby giving EU member states such as France substantial flexibility to implement their own notice and takedown provisions.

France adopted notice and takedown provisions in its Creation and Internet Law where Rights Holder organizations could submit complaints to France’s online copyright authority, The High Authority for the Dissemination of Works and the Protection of Rights on the Internet (HADOPI), who would then provide notices to online infringers and remove allegedly infringing content under a graduated three-stikes approach. However, it was reported that individual Rights Holders were not allowed submit complaints to HADOPI, as such complaints must be submitted by agents of industry organizations, rights collection agencies, and the French Center of Cinematography.

Further, the French Ministry of Culture revoked the three-strikes approach on July 9, 2013 (Decree No. 2013-596) due to a perceived lack of effectiveness and public concerns that its enforcement measures were overly punitive. However, the Decree did not expressly remove the Creation and Internet Law’s ISP penalties or its notice system. However, as mentioned, the HADOPI notice system, if still in effect, can only be utilized by industry organizations, rights collection agencies, and the French Center of Cinematography on behalf of individual Rights Holders.

-Sworn declaration that the authorized agent of the referral has standing to act in the name of the Rights Holder over the protected work or materials in question;
-Information on the website address(es) and other details of the alleged infringer; and
-Information on the infringing acts including date and time of the acts.

Guyana

Enforcement System: Judicial System

Berne Convention Member: Yes

Overview and Notes: According to the World Intellectual Property Organization, copyright law in Guyana is governed by its former colonizer, the United Kingdom. However, it does not appear that Guyana has adopted notice and take provisions as required by EU member states such as the United Kingdom under Article 14 of the EU Electronic Commerce Directive (Directive 2000/31/EC).

Overview and Notes: Despite multiple reform efforts, Peru does not currently maintain any notice and takedown provisions. Peru had agreed to adopt notice and takedown provisions in a side letter to the U.S.-Peru FTA in 2006, and it did adopt several copyright reforms in 2009 in order to implement its U.S.-Peru FTA obligations. However, such reforms do not appear to include notice and takedown provisions as promised in the U.S.-Peru FTA side letter.

However, Peru may soon be required to implement notice and takedown provisions if the TTP is finalized and the U.S. draft chapter is adopted in a final TPP agreement.

Overview and Notes: Uruguay does not currently maintain any notice and takedown provisions. It is reported that Uruguay is currently considering a number of copyright reforms, yet it does not appear that notice and takedown provisions are included in such reform proposals.

Last week, I had the privilege of being a guest writer for Seattle-area based Efinitytech on an article dealing with infringing online advertisements. Although it was focused on combatting trademark infringing online advertising on U.S.-based search engines such as Google, Bing and Yahoo!, as well as U.S. social media sites such as Facebook and Twitter, it contained many of the same considerations trademark owners, and their agents, should consider when combatting infringing online advertisements abroad. However, there are a few additional foreign issues trademark rights holders should consider.

1. Obtain A Trademark Registration. U.S. businesses generally need a U.S. federal trademark registration to submit an advertising complaint to a U.S. online advertising website. A U.S. federal trademark registration establishes a presumption of ownership and exclusive rights in a trademark in the U.S. This gives U.S. search engines and social media sites assurances that a filed advertising complaint is valid.

Additional Foreign Considerations: A trademark registration is also generally required to submit ad complaints in other countries. Many countries do not even recognize a business’ rights in a trademark unless it has registered the mark with the country’s national trademark office. As a result, Google, Bing and Yahoo!, their foreign subsidiaries, as well as many other foreign advertising sites, require that a business have a valid trademark registration in the country where they are filing an online ad complaint. This means that if a rights holder wants to enforce their trademark rights against a foreign ad, they generally have to have a valid trademark registration in that foreign country.

2. Advertising Websites Have Different Trademark Enforcement Reputations. U.S. search engines and social media sites have their own track records for responding to advertising complaints. For example, Bing and Yahoo!’s U.S. sites will often remove an infringing ad upon evidence of a valid U.S. federal trademark registration, while Google U.S.’ site generally declines removing ads infringing a descriptive trademark, even if the mark is federally registered through acquired distinctiveness (aka secondary meaning).

Additional Foreign Considerations: The varied reputations of online advertising sites’ handling of trademark ad complaints are even more disparate at the global level. Many foreign sites have good track records, while others less so. Also, some foreign advertising sites have ad enforcement features that offer benefits beyond those offered on most U.S. websites. For example, China’s leading search engine, Baidu, allows trademark rights holders to register their Chinese registered marks with their representatives in order to prevent others from purchasing infringing ads and ad words on their website. However, like Google, Baidu’s IP enforcement system is imperfect, as it has been criticized in the past for failing to stop the sale of ad words to fraudulent advertisers.

3. Multiple Ad Complaints May Need To Be Filed. Trademark rights holders may need to submit multiple complaints against an infringer before an infringer’s ad appears removed. This can be due to the ineffectiveness of an advertising website complaint system, or more likely because an infringing advertiser has made several ad purchases, requiring the submission of multiple ad complaints in order to effectively remove all of an infringer’s advertisements.

4. Consider The Ramifications Of Filing An Online Complaint. Lastly, submitting an online ad complaint may impact an infringing advertiser’s online reputation as well as the trademark rights holder. Based on these ramifications, trademark rights holders should consider reaching out to alleged infringers, either directly or through an attorney, to see if the disputed ad can be removed amicably.

Additional Foreign Considerations: The consequences of filing online trademark ad complaints abroad is as significant, or even more so, then doing so in the U.S. As I have previously highlighted, countries maintain different beliefs and perceptions towards the legal rights that should be given to trademarks and other forms of IP. In particular, several important and emerging foreign markets such as Canada, Chile and New Zealand disagree with forceful online IP enforcement, as seen in their current rejection of copyright website takedowns. This means that submitting online trademark ad complaints may have similar or even more negative reactions in a business’ particular industry (and among the public) abroad than at home. Based on these circumstances, businesses should feel even more inclined to first reach out to foreign infringing advertisers before they submit online ad complaints.

What’s The Takeaway? As combatting infringing online advertisements has many of the same challenges and considerations in the U.S. as abroad, businesses wishing to protect their brands abroad need to identify the countries where they have or may have significant business and develop strategies to protect against online ad infringement. This requires considering foreign trademark registration, identifying major foreign online advertising websites, and developing processes and procedures to monitor and enforce rights against infringing advertising activity on such websites. Doing so can help businesses to more effectively protect their brands in the foreign markets they wish to grow.

In recent months, representatives from the Trans Pacific Partnership Agreement (TPP; Australia, Brunei Darussalam, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, United States and Vietnam) member states have been pushing to finalize a final TPP agreement.[1] A particularly contentious issue in these negotiations has been the intellectual property (IP) chapter of the TPP Agreement. A predominant proposed version, the U.S. Draft IP Chapter, has been controversial as it requires TPP member states to adopt IP standards that are in many cases is on par with those under U.S. law, and in some cases, beyond U.S. law and generally-accepted global IP protection standards in the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).[2] As a result, several TPP member states have objected to U.S. Draft IP Chapter, thereby stalling progress towards a final TPP agreement.

Of particular importance in these debates is the online copyright enforcement protections procedures the TPP agreement will mandate for its member states. If enacted, the U.S. IP chapter would likely require TPP member states to adopt copyright enforcement measures that would allow copyright owners, rights holders, or agents thereof (collectively, “Authorized Party”) to directly petition Internet Service Providers (ISPs) to remove hosted infringing content. Article 16.3(a) of the U.S. Draft IP Chapter requires that TPP member states provide “legal incentives for [Internet] service providers to cooperate with copyright owners in deterring the unauthorized storage and transmission of copyrighted materials.” Although ambiguous, adopting such provisions would likely require TPP member states to maintain or enact a form of copyright protection protocols that would allow Authorized Parties to petition ISPs hosting or transmitting infringing content to remove such content.

The main question arising from these potential reforms is whether they would result in TPP member states adopting U.S.-like notice and takedown protocols, or less forceful ISP copyright enforcement measures. Notice and takedown systems generally provide ISPs a safe harbor from liability for hosting or transmitting infringing content if they remove infringing content they host or transmit upon receipt notice from an Authorized Party. In contrast, other TPP member states do not provide copyright owners such a level of protections. Some of these states do not require that a ISP take down allegedly infringing content upon receipt of notice from an Authorized Party to qualify for safe harbors. Others require that Authorized Parties seek judicial copyright enforcement to combat online infringement, which is a more delayed and costly process.

Although not stated in the U.S. Draft IP Chapter, the U.S. may, as it has in previous U.S. free trade agreements (FTAs), negotiate that TPP member states adopt notice and takedown protocols in TPP side letters.[3] In previous U.S. FTAs, the U.S. has executed additional annexed agreements, known as “side letters,” where other countries agreed to adopt U.S.-like notice and takedown protocols. This has had varying degrees of success. Australia, Peru and Singapore, among others, have adopted notice and takedown protocols similar to those under the U.S.’ Digital Millennium Copyright Act (17 U.S.C. § 512(c)(3)(A)) in FTA side letters with the U.S., while Chile rejected adopting such a system.

Similar mixed outcomes could result from the TPP as well. Brunei Darussalam, Mexico and Vietnam do not maintain any ISP copyright enforcement protocols short of judicial action. Further, a number of TPP member states including Canada, Chile and New Zealand maintain online copyright enforcement systems that arguably do not provide the same level of direct and expedient enforcement power or protections to Authorized Parties as notice and takedown systems. Lastly, some TPP member states such as Malaysia that do maintain notice and takedown protocols have called for establishing TPP agreement implementation exceptions for existing domestic legislation.[4] This would likely give TPP member states with weaker online copyright enforcement systems such as Canada, Chile and New Zealand the ability to maintain their less forceful online copyright enforcement systems, while still remaining parties to the TPP Agreement.[5]

Despite these limitations, the TPP’s potential adoption of notice and takedown protocols will ultimately impact the ability to which Authorized Parties can more quickly, cheaply and effectively enforce online copyright protections in the TPP member states. Adoption of notice and takedown protocols will enable Authorized Parties to more easily enforce online copyrights in TPP member states, while making such protocols optional would likely make such enforcement more difficult. Only time will tell whether the U.S. and other notice and takedown proponents will persuade other TPP member states to adopt notice and takedown protocols.

To understand how the TPP would impact individual TPP member state online copyright enforcement systems, the following are brief summaries of the TPP member states’ current online copyright enforcement systems. However, there are a few things to note:

Jurisdiction and National Treatment: In order for an Authorized Party to utilize a notice and takedown in a TPP member state, their content must generally qualify for national copyright protection in that TPP member state, and the particular ISP must be subject to the jurisdiction of that country. Further information about these preliminary issues can be found in my March 25, 2013 posting.

Enforcement System Legend: As mentioned, online copyright enforcement procedures vary amongst the TPP member states. Countries that maintain a notice and takedown protocols are identified below as a “Notice and Takedown,” while countries that maintain systems that simply require ISPs to notify infringers of their infringing acts without infringing content removal are listed as “Notice and Notice.” Countries that do not have means for Authorized Parties to directly enforce their copyright protections through ISP notices, and are instead forced to seek judicial action are referred to as “Judicial System.”

TPP Member State Online Copyright Enforcement Systems

United States

Enforcement System

Notice and Takedown

Overview and Notes

The U.S. notice and takedown protocols have been implemented in FTAs with Bahrain, Dominican Republic, Morocco, Oman, Peru, Singapore and South Korea.

A physical or electronic signature of a person authorized to act on behalf of the content owner alleging infringement;

Identification of the copyrighted work(s) claimed to have been infringed;

Identification of the material that is claimed to be infringing and wished to be removed or disabled, including any reasonable information that would allow an ISP to locate the material (i.e. website addresses);

A statement that the copyright owner has a good faith belief that the use of their content is not authorized by the copyright owner; and

A statement that the information provided is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the copyright owner of an exclusive right that is allegedly infringed.

The statement: “I am the owner (or agent of the owner of the copyright) in the copyright material specified in the Schedule [See number 7 below], being copyright material residing on your system or network.”

(If submitted by a copyright owner) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by the copyright owner or a licensee, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material.”;

(If submitted by a copyright owner’s agent) The statement: “I believe, in good faith, that the storage of the specified copyright material on your system or network is not authorized by the copyright owner or a licensee of the copyright owner, or the Copyright Act 1968, and is therefore an infringement of the copyright in that material”;

(If submitted by a copyright owner’s agent) The statement: “I have taken reasonable steps to ensure that the information and statements in this notice are accurate.”;

The copyright owner or their agent’s name, address, e-mail address, telephone number and fax number; and

An attached schedule to the notice including a description of the copyright material and the location of the infringing content.

Brunei Darussalam

Enforcement System

Judicial System

Overview and Notes

Brunei does not currently maintain any legal means for Authorized Parties to directly petition ISPs to takedown infringing content. However, recent reports have indicated that Bruneian authorities are evaluating copyright reforms, which may include ISP notice and takedown protocols.[6]

Governing Legislation

N/A

Notice Requirements

N/A

Canada

Enforcement System

Notice and Notice

Overview and Notes

Although Canada considered adopting a notice and takedown protocols in 2006, they opted for a notice and notice system in 2012 in order to balance the interests of copyright owners and Internet users.[7]

The reasoning why the copyright owner/rights holder believes that an infringement has taken place; and

The copyright owner/rights holder’s contact information.

Malaysia

Enforcement System

Notice and Takedown

Overview and Notes

Malaysia enacted copyright reforms in 2010 that permit Authorized Parties to submit infringement notices to ISPs that will remove infringing content within 48 hours of notice to the alleged infringer from the ISP. However, The International Intellectual Property Alliance (IIPA) has criticized Malaysia’s notice and takedown protocols for not providing enough details about notice requirements and enforcement procedures.[9]

As mentioned, Malaysia does not provide specific content requirements for ISP takedown notices.

Mexico

Enforcement System

Judicial System

Overview and Notes

Mexico has no legal procedures for Authorized Parties to remove infringing online content short of seeking judicial action. It is also important to note that Mexican telecommunications laws prohibit ISPs from disclosing their customers’ personal information.[10]

Governing Legislation

N/A

Notice Requirements

N/A

New Zealand

Enforcement System

Notice and Takedown-Judicial System Mix (aka Three Strikes)

Overview

After enacting notice and takedown protocols in 2008, New Zealand repealed them in February 2010. They were replaced with a Three Strikes System, requiring Authorized Parties to submit multiple notices to an ISP, and a takedown application to the New Zealand Copyright Tribunal in order to obtain the removal of infringing content. The Three Strike System subjects the Authorized Party to fees of NW$25.00 (US$20.00) per notice, and NZ$200.00 (US$208.00) per application.[11]

(If a rights owner is acting as an agent for the copyright owner) Evidence of the rights owner’s authority to act as agent for the copyright owner;

Identify the IP address at which the infringements are alleged to have occurred;

The date on which the infringements are alleged to have occurred at that IP address;

For each copyright work in which copyright is alleged to have been infringed: (i) the name of the copyright owner in the work; (ii) the name of the work, along with any unique identifiers by which it can be identified; (iii) the type of work it is (in terms of section 14(1) of the Act); (iv) the restricted act or acts (in terms of section 16(1) of the Act) by which copyright in the work is alleged to have been infringed; (v) the New Zealand date and time when the alleged infringement occurred or commenced, which must specify the hour, minute, and second; and (vi) the file sharing application or network used in the alleged infringement; and

A statement that, to the best of the rights owner/copyright owner’s knowledge, the information provided in the notice is true and correct; and that statement must be verified by a signature (physical or digital) of the rights owner/copyright owner or a person authorized to sign on behalf of the rights owner/copyright owner.

Information reasonably sufficient to enable the ISP to identify the copyrighted work(s) appeared to have been infringed;

The identity, address, telephone number and electronic mail address of the complaining party (or its authorized agent);

Statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by copyright owner, its owner, its agent or the law;

Statement with sufficient indicia of reliability (such as a statement under penalty of perjury or equivalent legal sanctions) that the complaining party is the owner of an exclusive right that is allegedly infringed or is authorized to act on the owner’s behalf; and

Name and address of the complainant (if acting on the copyright owner’s behalf);

Complainant address for service in Singapore (if a non-Singapore resident);

Complainant’s telephone number, fax number and e-mail address;

Identification of copyright material and location of allegedly infringing content;

A statement that the information in the notice is accurate;

A statement that the complainant is the owner or exclusive licensee of the copyright in the material referred to in complaint or is authorized to act on behalf of the owner or exclusive licensee of the copyright in the material referred to in the notice;

A statement that the complainant requires the network service provider to remove or disable access to the allegedly infringing content;

A statement that the complainant or their agent, in good faith, believes that the electronic copy referred to in the notice is an infringing copy of the protected material content;

A statement that the complainant is the owner, exclusive licensee, or agent thereof of the copyrighted content; and

A statement that the complainant submits to the jurisdiction of the courts in Singapore for the purposes of any proceedings relating to any offense under section 193DD(1) of the Copyright Act or any liability under section 193DD(1)(b) of the Copyright Act.

**Important Note**: Even if a country maintains notice and takedown protocols, an ISP is generally not obligated to take down infringing content despite legal incentives to do so. Those with further questions about a TPP member state’s online copyright enforcement procedures should seek qualified counsel in that particular country.